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US Supreme Court to hear oral arguments in Medtronic v Boston Scientific

The US Supreme Court will hear oral arguments today in a case which may shed light on who has the burden of proof when a patent licensee is accused of infringing the patent.

In Medtronic v Boston Scientific, the court will consider whether a licensee challenging a declaratory judgment must demonstrate that its product does not infringe, or whether the patent holder must prove there was infringement.

The case concerns a device manufactured by Medtronic which treats heart failure, known as cardiac resynchronisation therapy (CRT). The patent is owned by Mirowski Family Ventures, which licensed it to another company called Guidant. In 1991, Medtronic sublicensed the patent to Eli Lilly, which had taken over from Guidant as the party-in-interest.

In 2007, Mirowski claimed several Medtronic products infringed the patents. Medtronic sued for a declaratory judgment of non-infringement.

In all other patent litigation, including other declaratory judgments, the burden of proving infringement is on the patent owner. But in September last year, the Federal Circuit ruled that Medtronic had the burden of proving it did not infringe, because it had brought the action for a declaratory judgment and because it was the licensee.

The Federal Circuit said that since the only remedy sought by Medtronic was having a court declare the products in question to be non-infringing, Medtronic should bear the burden of proving it is entitled to such relief.

“A contrary result would allow licensees to use MedImmune’sshield as a sword—haling licensors into court and forcing them to assert and prove what had already been resolved by license,” wrote Judge Richard Linn on behalf of the panel.

The decision overturned a ruling by the District Court for the District of Delaware, which upheld the validity of the patents but concluded that Medtronic did not infringe.

Medtronic appealed to the Supreme Court in March this year, and the court agreed to hear the case in May.

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